Written by Daniel K. Yarbrough, Ph.D. and Benjamin Anger

The PTAB granted-in-part a patent owner’s motion to substitute claims based on evidence of secondary considerations of nonobviousness in Valeo North America, Inc. v. Schaeffler Technologies, AG & CO. KG, IPR2016-00502, Paper 37, (P.T.A.B. June 20, 2017).

Valeo brought the IPR challenging all thirteen claims of the Schaeffler patent, drawn to a mechanism for dampening vibration within force transmission devices, as obvious over a combination of four prior art references. Schaeffler, in addition to arguing the existing claims would not have been obvious, also filed a contingent motion to amend the claims, to replace 12 of the 13 original claims with substitute claims. The PTAB agreed with Valeo that the existing claims would have been obvious over the combined references, though noting that it was “a close case.”

The PTAB granted-in-part the motion to amend with respect to two of the twelve proposed claims based on Schaeffler’s evidence of unexpected results. Schaeffler conceded that all elements of the substitute claims are found in the prior art, but nonetheless argued the substitute claims would not have been obvious because a skilled artisan would have found the observed improvements unexpected. The PTAB found that a narrow subset of tuning parameters recited in two of the substitute claims constituted a critical sub-range within the previously disclosed range of values, and thus the unexpectedly improved results obtained by using the recited sub-range provided sufficient evidence to show nonobviousness. The other ten claims relied on a broader range of tuning parameters and were found to be unpatentable because they lacked the necessary nexus between the alleged unexpected results and the broader claimed range.

In response to Valeo’s arguments, the PTAB reviewed the two surviving substitute claims for definiteness, finding that, when read in view of the specification, prosecution history, and level of skill in the art, limitations such as “oil influence is that of rotating oil in a cavity,” “flowed through with oil,” and “approximately 0.14” were not indefinite under §112. In further response to Valeo’s arguments, the PTAB briefly reviewed the substitute claims for compliance with the patentable subject matter requirements of §101 and determined that, even if the claims involved a law of nature, they recite sufficient structure to comply with the requirements of §101.

Granted motions to amend in IPR proceedings remain rare. However, there have been several recent success stories (see, e.g., Activision Blizzard, Inc. v. Acceleration Bay, LLC, IPR2015-01953, Paper 107, IPR2015-01972, Paper 111, and IPR2015-01996, Paper 101, (P.T.A.B. April 19, 2017); and Amerigen Pharm. Ltd. v. Shire LLC, IPR2015-02009, Paper 38 (P.T.A.B. March 31, 2017). In addition, the analysis put forth by the PTAB in Valeo further suggests that the PTAB is willing to consider well-crafted substitute claims, perhaps especially when unpatentability of the original claims is based on a narrow preponderance of the evidence.